INTA Internet Committee Report: Substituted Service of Process by Electronic Mail

Active commercial websites owned by people and entities that conceal their identity and whereabouts by providing false information (often with the exception of a valid e-mail address), and/or by using proxy services that shield such information from public disclosure (hereafter, “fictitiously owned commercial websites”) threaten the ability to serve judicial documents swiftly (and therefore to institute legal action swiftly, if at all). Therefore, the prevalence of fictitiously owned commercial websites has resulted in increased abuses of intellectual property, online fraud and other illegal schemes, resulting in decreased consumer confidence in the stability and security of the Internet marketplace.
In 2007, the INTA Anti-Counterfeiting & Enforcement Committee (ACEC) contacted the INTA Internet Committee for its input on various policy proposals, including the feasibility of requiring domain owners to appoint an agent for service of process. The Internet Committee responded with the suggestion that national laws could be amended to allow for service of process through the contact points found in the Whois database. The ACEC accepted this recommendation which was included in its report to the Board in May of 2008.
In mid 2008, the proposal was referred to the Whois Subcommittee of the Internet Committee for further development and consideration. And in January 2009, the Electronic Service Working Group was formed from members of the Whois Subcommittee, with additional members from the Courts and Tribunals Subcommittee of the INTA Enforcement Committee.
The resulting report, Substituted Service of Process by Electronic Mail: Achieving Notice on Fictitious Owners of Commercial Websites for Access to Judicial Remedies, considers the prospects for streamlining the process necessary before an aggrieved party may undertake substituted service of process on the hidden owner of a commercial web site by electronic mail.
In September of 2009, the subcommittee’s proposal was presented to the INTA Policy Development & Advocacy Executive Council and the INTA Board of Directors Executive Committee and in November 2009 to the INTA Board of Directors taking a position on the issue:
1) Should the recommendation be limited to trademark infringement and cyber squatting cases?
2) What effect would the proposal have on non-trademark claims involving fictitiously owned commercial web sites?
3) Would other legal organizations and stakeholders support and/or have changes to the proposal?

Mr. Samir Rahman
On & in behalf of
Patent and Law firm ‘IPPro’